Ericsson Inc et al v TCL Communication Technology Holdings Ltd et al CAFC

A split panel of the Federal Circuit has reversed the denial of an Alice motion in the Eastern District of Texas, granting summary judgment in TCL’s favor—wiping away a $75M jury verdict for Ericsson, plus a $25M enhancement for willfulness, at the same time. The two-judge majority opinion characterizes the invalidated claims, recited in a patent generally related to “controlling access to a platform for a mobile terminal for a wireless telecommunications system”, as patent-ineligibly directed to the abstract idea of “controlling access to, or limiting permission to, resources”. To get there, the panel majority cleared away objections to its authority to hear an appeal on this issue at all—because the denial came in a pretrial summary judgment motion and because TCL did not preserve the issue for appeal throughout the ensuing trial—by, among other things, characterizing the denial of summary judgment as an “effective grant of patent validity”. That move prompted a dissent that takes issue with nearly every aspect of the panel majority’s decision, including to hear an appeal of this issue at all and its treatment of the substance, which, warns the dissent, could “import Section 101 invalidity into virtually all existing patents”.

The Federal Circuit has reversed and remanded a notable ruling on fair, reasonable, and non-discriminatory (FRAND) patent licensing in TCL v. Ericsson. In a December 5 opinion, the appeals court overturned a Central District of California decision that offers made by Ericsson to mobile device maker TCL had purportedly not been FRAND and that set the terms of a FRAND license. That lower court decision, held the Federal Circuit, had deprived Ericsson of its constitutional right to a jury trial by deciding a key license term from the bench. As a result, the Federal Circuit declined to revisit the district court’s underlying FRAND analysis. The overturned decision is just the fourth US ruling in which a court has determined a FRAND rate for a portfolio of standard essential patents (SEPs).

The Federal Circuit has held that patent owners may appeal rulings on the Patent Trial and Appeal Board’s statutory time bar for inter partes review (IPR), under which the Board may not institute trial more than one year after a petitioner is sued for infringement. In an opinion issued on January 8 in Wi-Fi One v. Broadcom, the Federal Circuit held that the statutory bar on appellate review for institution decisions from 35 USC Section 314(d) does not apply to Section 315(b), which governs the time bar, holding that Congress did not “clearly and convincingly indicate its intent to prohibit judicial review”. Circuit Judge Todd M. Hughes dissented, arguing that the majority opinion interprets Section 314(d) too narrowly and is inconsistent with the US Supreme Court’s decision in Cuozzo Speed Technologies v. Lee.